The Complainants are Costco Wholesale Membership Inc., Price Costco International, Inc. and Costco Wholesale Corporation (hereinafter referred to jointly and severally as “Complainant”), Issaquah, Washington, United States of America (“United States”).
The Respondent is Pacific Home Remodeling, Inc., Los Angeles, California, United States.
The disputed domain names <costcoexterior.com>, <costcopainting.com>, <costcoremodeling.com>, <costcoreplacmentwindows.com>, and <costcowindows.org> are registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2008. On August 13, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On the same date, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2008. The Center received email communications from Respondent on August 19, 2008, August 22, 2008, August 27, 2008, and September 4, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 22, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel considers the series of emails received by the Center from Respondent to be the Response.
Complainant has registered numerous marks with the United States Patent & Trademark Office (“USPTO”) for the service marks COSTCO WHOLESALE, COSTCO HOME, and COSTCO. Such registrations date from February 5, 1985.
Complainant has operated membership warehouse stores under those service marks since 1983. Presently, Complainant operates over 530 warehouse stores worldwide, including over 390 warehouse stores in the United States and Puerto Rico. Complainant has more than 53 million member cardholders worldwide, including more than 38 million member cardholders in the United States. Complainant's warehouse stores offer a great variety of goods and services to its members.
Complainant has over 100 warehouse stores in California where Respondent is located. Complainant has registered the domain name <costco.com> and uses it to resolve to a retail web site where it sells a wide variety of goods and services. Complainant's web site sales for fiscal year 2007 exceeded USD 1 billion.
Respondent registered the domain names at issue on January 28, 2008. At the time the Complaint was filed, Respondent used the domain names at issue to resolve to Respondent's web site where Respondent offered its home remodeling products and services.
Complainant has not licensed or otherwise permitted Respondent to use its marks or to register the domain names at issue.
Complainant contends that the domain names at issue are confusingly similar to Complainant's registered marks, that Respondent has no rights or legitimate interests in respect of the domain names, and that the domain names were registered and are being used in bad faith.
Respondent does not contest that the domain names at issue are confusingly similar to Complainant's marks. Respondent seems to assert that it has rights and legitimate interests in respect of the domain names at issue, since it intended to use the domain names at issue in respect to a joint marketing program with the Home Service Store for exterior coating (Texcoat) which was to be marketed through Complainant's web site. Respondent denies that the domain names were registered and were being used in bad faith, because the names were registered for the purpose described above and that Respondent “mistakenly redirected traffic from [the domain names at issue] to [Respondent's] own web website by filling up [Respondent's] domain name in the wrong location.”
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. that the respondent has no rights or legitimate interests in respect of the domain name; and
3. that the domain name has been registered and is being used in bad faith.
The domain names at issue consist of the registered mark COSTCO to which the English words “exterior”, “painting”, “remodeling”, “windows” and a misspelling of “replacementwindows” are affixed. It has long been held that the addition of generic or descriptive terms to a mark will not alter the fact that a domain name at issue is confusingly similar to the mark in question. F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547 (<prescriptionsvalium.com>); Nokia Corporation v. Nokiagirls.com aka IBCC WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up, WIPO Case No. D2000-0104 (<eautomotive.com>). The Panel finds that the domain names at issue are confusingly similar to Complainant's registered mark.
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered COSTCO service mark. Respondent's assertion that he intended to use the domain names at issue in a cooperative venture with a third party which was to be run through Complainant's web site does not give Respondent rights or legitimate interests in respect of the domain names at issue. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
Respondent argued that he registered the domain names at issue for the purpose of participating in an exterior coating venture with a third party which was to be sold through Complainant's web site. However in the Panel's view, only two of the domain names conceivably could reference the alleged co-operative venture: <costcoexterior.com> and <costcopainting.com>. The other three are not in the Panel's view related to the alleged co-operative venture. Moreover, it is difficult to imagine how the domain names could have been accidentally set to resolve to Respondent's web site at which he offered for sale products and services competitive with some of those of Complainant. Respondent's assertions do not ring true. The Panel finds that Respondent registered and is using the domain names at issue in contravention of paragraph 4(b)(iv) of the Policy in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <costcoexterior.com>, <costcopainting.com>, <costcoremodeling.com>, <costcoreplacmentwindows.com>, and <costcowindows.org> be transferred to Costco Wholesale Membership, Inc.
M. Scott Donahey
Date: October 9, 2008